Heineken Technical Services, BV v. Darby

Citations: 103 F. Supp. 2d 476; 2000 WL 898019Docket: 1:98-cv-11952

Court: District Court, D. Massachusetts; June 26, 2000; Federal District Court

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Heineken Technical Services, B.V., a Dutch corporation specializing in bottling technology, filed a complaint against Charles Darby, DecoTec International, Ltd., and Wolfgang Fiwek in the U.S. District Court for Massachusetts. The complaint alleges that Brandt Technologies, Inc. invented a labeling process for bottles and assigned rights to Heineken, which later disclosed proprietary information to Alfill Corporation under confidentiality agreements. Despite these agreements, Fiwek allegedly attempted to patent the invention after leaving Alfill, with Darby’s encouragement, and acquired the rights to the patent from Fiwek.

Heineken seeks a declaratory judgment asserting its rightful ownership of the bottling technology identified in Fiwek's U.S. patent application, alongside claims for misappropriation of trade secrets, unfair competition, deceptive trade practices, unjust enrichment, and a declaration of constructive trust for misappropriated income. The lawsuit follows a similar suit filed in Germany regarding Fiwek's inventorship rights, where the German court ruled in Fiwek's favor, a decision that Heineken is currently appealing.

Defendants have filed two motions to dismiss, asserting a lack of federal question jurisdiction and that the German court’s ruling should preclude this action. The court finds these arguments unmeritorious and denies the motions to dismiss. Additionally, Heineken filed a motion for sanctions related to Fiwek's failure to attend a deposition, which is also pending before the court.

Defendants' Motion to Dismiss for Lack of Subject Matter Jurisdiction is denied, as Plaintiff's claims arise under federal patent law. The Supreme Court's ruling in Christianson v. Colt Industries established a two-part test for federal jurisdiction over patent claims under 28 U.S.C. § 1338(a). Jurisdiction exists if a well-pleaded complaint shows either that federal patent law creates the cause of action or that resolution of a substantial question of federal patent law is necessary for the plaintiff's right to relief. 

Plaintiff's Complaint seeks a declaratory judgment affirming that Brandt's employees are the rightful inventors of technology claimed in Defendant Fiwek's pending U.S. patent application, thus implicating federal patent law, specifically 35 U.S.C. §§ 116, 256, and 102(f). Plaintiff argues that this claim meets the second jurisdictional basis under Christianson, as resolving the claim necessarily involves substantial issues of federal patent law.

To establish jurisdiction, Plaintiff must demonstrate: (1) that applicable patent law issues are raised in a well-pleaded complaint; (2) that these issues are a necessary element of Count I; and (3) that they are substantial enough to warrant jurisdiction. The Complaint satisfies all three requirements. It raises a federal patent law issue under the well-pleaded complaint rule, seeking a declaration of inventorship relevant to 35 U.S.C. § 116. 

Defendants counter that Plaintiff's claim is excluded from § 116 due to alleged deceptive intent in Fiwek's patent application. However, this deceptive intent limitation, highlighted in Stark, does not negate Plaintiff's claim, as Stark's reference to deceptive intent is considered dicta and pertains to a different section (256). The primary issue in this case revolves around the interpretation of § 256.

The court addresses the application of 35 U.S.C. § 116, noting that it does not preclude action against an innocent inventor even if a patent applicant acted with deceptive intent. The defendants argue that any deceptive intent should bar action under § 116, but the court finds this interpretation illogical and inconsistent with legislative history. It concludes that the limitations of § 116 do not apply, allowing the plaintiff's well-pleaded complaint to raise a valid patent law issue.

The court emphasizes that a necessary element of the plaintiff's Count I claim is the determination of true inventorship, making it essential for federal jurisdiction under 28 U.S.C. § 1338(a). The defendants' characterization of the plaintiff's claim as merely a state law misappropriation is dismissed as unconvincing.

To establish federal jurisdiction, the court applies a substantiality test, affirming that inventorship issues under § 116 are significant enough to satisfy this requirement. The court rules that the plaintiff meets the well-pleaded complaint rule, necessary element requirement, and substantiality requirement, thus denying the defendants' motions to dismiss for lack of jurisdiction.

Additionally, the defendants' motion to dismiss based on a parallel German proceeding is rejected. They argue for the binding effect of the German court's decision under comity principles, but the court highlights that foreign patent law judgments lack deference in U.S. courts, citing the variability in patent standards across countries. Consequently, the court denies the motion to dismiss based on the German decision.

Plaintiff's Motion for Sanctions, prompted by Defendant Fiwek's absence from a scheduled deposition, has been denied without prejudice, allowing for its potential renewal at the case's conclusion. The court has also denied defendants' motions to dismiss based on lack of jurisdiction and a ruling from a German court in a related case. The case must proceed under federal question jurisdiction due to Defendant Fiwek's status as a German citizen, which precludes diversity jurisdiction. Additionally, the court highlights that the statute grants district courts original jurisdiction over civil actions related to patents, plant variety protection, copyrights, and trademarks, excluding state courts in these matters. It notes the requirement of a lack of deceptive intent concerning misjoinder and nonjoinder, although it does not clarify whether this applies to all parties involved.